Gap, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1306001505988
Complainant is Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com>, registered with Internet.Bs Corp.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 21, 2013.
On June 27, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@athletia.com, postmaster@banabarepublic.com, postmaster@banananrepublic.com, postmaster@bananarepubluc.com, postmaster@oldnavay.com, postmaster@peperlime.com, and postmaster@piprlime.com. Also on September 19, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent has listed the disputed domain name <athletia.com> for sale.
ii. Respondent is a recalcitrant, serial cybersquatter.
iii. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
iv. Respondent is using the disputed domain names to attract and mislead consumers for its own profit.
v. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
vi. Respondent surely had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Gap, Inc., is a leading clothing and clothing accessories retailer.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ATHLETA mark (e.g., Reg. No. 2,427,769 registered February 13, 2001); for the BANANA REPUBLIC mark (e.g., Reg. No. 1,347,849 registered July 9, 1985); for the OLD NAVY mark (e.g., Reg. No. 2,006,872 registered October 8, 1996); and for the PIPERLIME mark (e.g., Reg. No. 3,469,635 filed May 26, 2006, registered July 15, 2008). Complainant is the owner of trademark registrations with Panama’s Directorate General of the Industrial Property Registry for the OLD NAVY mark. (e.g. Reg. No. 94,600 registered June 26, 1998).
Respondent, Fundacion Private Whois / Domain Administrator, is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. Respondent registered the disputed domains on the following dates:
• the <athletia.com> domain name on June 13, 2004
• the <banabarepublic.com> domain name on June 27, 2013
• the <bananarepubluc.com> domain name on November 2, 2005
• the <oldnavay.com> domain name on October 23, 2006
• the <peperlime.com> domain name on January 8, 2010
• the <piprlime.com> domain name on October 23, 2006.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the ATHLETA, BANANA REPUBLIC, OLD NAVY, and PIPERLIME marks pursuant to Policy ¶ 4(a)(i) through registrations with the United States Patent and Trademark Office (“USPTO”) and in the OLD NAVY mark with Panama’s Directorate General of the Industrial Property Registry. Registration with a government trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). It is irrelevant whether a complainant has registered a mark in the same location as respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Further, with respect to the PIPERLIME mark, the Panel finds that Complainant’s date of filing the trademark registration for the mark is the effective date of Complainant’s rights in the mark, pursuant to Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant alleges that Respondent’s <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names are confusingly similar to Complainant’s registered marks under Policy ¶ 4(a)(i). All of the disputed domain names add the generic top-level domain (“gTLD”) “.com.” Adding a gTLD such as “.com” does not create a distinction between a disputed domain name and a registered trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent’s <athletia.com> domain name adds an “i” to Complainant’s ATHLETA mark. Changing a disputed domain name by a single letter is insufficient to differentiate a disputed domain name from a registered mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Each of the <banabarepublic.com>, <banananrepublic.com>, and <bananarepubluc.com> domain names vary by one letter. The <banabarepublic.com> domain name changes the letter “n” in “banana” into the letter “b,” and the <banananrepublic.com> domain name adds an additional “n” to Complainant’s BANANA REPUBLIC mark. The <bananarepubluc.com> domain name replaces the letter “i” in “public” with a “u.” All of the disputed domain names eliminate the space between the word “banana” and “republic.” These variations are not significant to distinguish a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
In the <oldnavay.com> domain name, Respondent eliminates the space between the terms “old” and “navy” and also adds an additional letter “a” in the term “navy.” Eliminating spaces and adding letters does not distinguish a disputed domain name from a given mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <peperlime.com>, and <piprlime.com> domain names differ from Complainant’s PIPERLIME mark by varying a single letter. Respondent’s <peperlime.com> domain name changes the “i” in “piper” to an “e.” Respondent’s <piprlime.com> domain name eliminates the “e” in “piper.” Eliminating letters and misspelling terms does not distinguish a disputed domain name from a given mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel finds that Respondent’s <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names are confusingly similar to Complainant’s registered marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent has no rights or legitimate interests in the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names because Respondent is not commonly known by the domains under Policy ¶ 4(c)(ii). Complainant claims that Respondent has no trademark or intellectual property rights in the domain names. Complainant contends that it has not licensed, authorized, or permitted Respondent to use its marks. The WHOIS information for Respondent’s disputed domain names shows the registrant for each of the disputed domain names is “Fundacion Private Whois / Domain Administrator.” The Panel finds that respondent has no rights or legitimate interests in the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names because Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.).
Complainant claims that Respondent has no rights in the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant contends that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites. The <athletia.com> domain name resolves to a website featuring links including, e.g., “Fitness wear,” “Women’s Athletic Wear,” “Dresses,” “Sports Clothes,” “Record Meeting,” “Car Rental Tia,” and “Pointes De Cross”; the <banabarepublic.com> domain name resolves to a website featuring links such as, e.g., “Banana Republic,” “Banana Republic Dresses,” “Banana Republic Coupons,” and “Banana Republic Outlet;” the <banananrepublic.com> domain name resolves to a website featuring links such as, e.g., “Banana Republic Clothing,” “Womens Apparel,” “Work Wear,” and “Gap Clothes;” the <bananarepubluc.com> domain name resolves to a website displaying links such as, e.g., “Banana Republic Clothing,” “Bank Online Bill Pay,” “Bananarepublic.com,” and “Trendy Women’s clothing”; the <oldnavay.com> domain name resolves to a website showing links such as, e.g., “Old Navy Clothing,” “Old Navy Coupons,” “Women’s Clothing,” and “Mens Clothing;” the <peperlime.com> domain name resolves to a website that lists links such as, e.g., “Designer Shoes and Boots,” “Coated Skinny Jeans,” “dress Sandals Shoes,” and “Womens Orthopedic Shoes”; and the <piprlime.com> domain name resolves to a website displaying links including, e.g., "Franco Sarto Shoes,” “Wholesale Designer Shoes,” and “Clothing Fashion Store.” Each of the offered links appear to be either competing with Complainant’s business by offering clothing products, or entirely unrelated, by offering services such as “online bill pay.” Complainant contends that Respondent receives pay-per-click revenue from the links listed on the websites resolving from the disputed domain names. Previous panels have found that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when it uses a confusingly similar domain name to resolve to a website featuring pay-per-click links, some of which compete with the complainant’s business. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel concludes that because Respondent’s resolving websites feature links displaying Complainant’s registered marks, as well as links that compete with Complainant’s business, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶4(c)(i) and (iii).
Complainant alleges that Respondent has registered and is using the <athletia.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent offers the domain name for sale. However, Respondent’s evidence fails to show an offer to sell the <athletia.com> domain name.
Complainant claims that Respondent has registered and is using the disputed domain names in bad faith because Respondent is a recalcitrant, serial cybersquatter. Complainant provides examples and references to prior UDRP decisions held against Respondent. See Brainetics, LLC v. Fundacion Private Whois/ Domain Admin., FA 1485729 (Nat. Arb. Forum Apr. 10, 2013); see also Google Inc. v. Fundacion Private Whois/ Domain Admin., FA 1483114 (Nat. Arb. Forum Apr. 2, 2013.) Previous panels have generally found that providing evidence of prior UDRP rulings against a respondent or when a respondent registers multiple infringing domain names is sufficient evidence to show bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel also concludes that, because seven domain names are in dispute in the present case, additional support exists for a finding of an established pattern of bad faith. See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct). Due to previous adverse UDRP decisions against Respondent, and the numerous domain names at issue in the current dispute, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent has registered and is using the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names in bad faith under Policy ¶ 4(b)(iii). Complainant claims that the links present on the websites that resolve from the disputed domain names compete with Complainant and its businesses. Complainant argues that these links promote products that compete with Complainant and thus diverts potential customers away from Complainant’ to third party websites, disrupting Complainant’s business. Previous panels have found using a confusingly similar domain name to resolve to a website featuring links to third parties that compete with a complainant’s business is bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered and is using the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent is using confusingly similar domain names to lead unsuspecting Internet users to a website featuring links that compete with Complainant, for profit. The links associated with each website resolving from the disputed domain name offer links promoting products similar to the merchandise for sale in Complainant’s retail stores. Previous panels have found that a respondent uses a disputed domain name in bad faith under Policy ¶ 4(b)(iv) when it creates a likelihood of confusion between the disputed domain name and a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the resolving website. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names are straightforward examples of typosquatting. Previous panels have found that varying a domain name by one letter, from a registered mark is typosquatting and intent to register in bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, and <oldnavay.com> domain names are altered by a letter and the elimination of spacing, which is typosquatting due to the apparent intentional misspelling of the marks within the domain name. The Panel therefore finds bad faith registration Policy ¶ 4(a)(iii).
Complainant contends that Respondent was a member of Complainant’s affiliate program and thus knowingly registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Previous panels have found that registering a domain name that is confusingly similar to a complainant’s registered mark, after being in a complainant’s affiliate program is an indication of bad faith use and registration. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program). The Panel finds that Respondent knew of Complainant’s rights in its registered marks, and registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athletia.com>, <banabarepublic.com>, <banananrepublic.com>, <bananarepubluc.com>, <oldnavay.com>, <peperlime.com>, and <piprlime.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 29, 2013
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